HONOURABLE SRI JUSTICE M.S.

RAMACHANDRA RAO
AND
HONOURABLE SRI JUSTICE T.AMARNATH GOUD

CIVIL MISCELLANEOUS APPEAL NO.160 OF 2020

J U D G M E N T:
(Per Sri Justice M.S.Ramachandra Rao)

This Appeal is preferred assailing the order dt.06.01.2020 in

I.A.No.1535 of 2018 in C.O.S.No.38 of 2018 on the file of the XIII

Additional District and Sessions Judge, Ranga Reddy District at

L.B.Nagar.

2. The appellant herein is the plaintiff in the said suit.

3. The appellant is a Private Limited Company which provides

educational services to students under the name and style ‘Chirec Public

School’ and ‘Chirec International School’.

The case of the appellant

4. According to the appellant, it has been using the word mark

‘CHIREC’ since 20.02.1989 with specific and distinct colours and

design and has earned great reputation over the years; that the said word

‘CHIREC’ is derived from ‘Children’s Recreation Centre’, an institution

set up by the Promoter of the appellant prior to the establishment of the

schools; the said mark had been exclusively used by the appellant since

1989 and it had gained a distinctive recognition and association with the
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mark and the rights in relation to the mark had exclusively vested with

the appellant.

5. The appellant contended that it got the said trade mark registered

vide trade mark registration No.3168471 dt.27.01.2016 under Class 41 of

the Schedule to the Trade Marks Act, 1999 (for short, ‘the Act’); that

such registration ensured that the mark is reserved for the exclusive use

of the appellant in the field of education; that the appellant is running

three campuses in Hyderabad where it offers education to large number

of students and it offers choice of three curricula – (a) International

Baccalaureate Diploma Programme (IBDP), (b) Cambridge International

Examinations and (c) Central Board of Secondary Education (CBSE).

6. According to the appellant, in February 2017, it came to know that

the respondent was using a mark identical with and deceptively similar

to the appellant’s trade mark promoting educational services to students

from Classes 1 to 10 at Madhugiri, Tumkur in Karnataka State.

7. The appellant alleges that the respondent is operating under the

mark of ‘CHIREC PUBLIC SCHOOL’ and thus infringes the registered

trade mark of the appellant by its unauthorized use of the word

‘CHIREC’ ; and such unauthorized use, according to the appellant, falls

within the ambit of Section 29 of the Act. It is alleged by the appellant

that the use of the term ‘CHIREC’ by the respondent in its business is

identical with the appellant’s trade mark and is causing confusion among
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the public leading to a false presumption of association with the

appellant’s schools; that the respondent is not a permitted user nor a

prior user of the said word ‘CHIREC’; and the appellant is entitled to

safeguard its right of the exclusive use of the trade mark under Section

28 of the Act.

8. The appellant had issued a notice to cease and desist on

17.02.2017 to the respondent demanding the respondent to abstain from

the use of the mark ‘CHIREC’ in the running of its school and it is

contended that the respondent replied to the said notice on 09.03.2017

refusing to comply with the same.

9. Therefore, the above suit was filed in June, 2018 seeking the

following reliefs:

“(a) Declaring that the Defendant has infringed the registered trade
mark of the Plaintiff by using “CHIREC” as part of its trade
name or business;

(b) Granting a permanent injunction, restraining the Defendant, by

themselves, their servants, agents or anyone claiming through
them from engaging in the services listed under Trade mark
Class 41, using the mark ‘CHIREC’ or any other similar
sounding mark in the course of their business and from
infringing the Plaintiff’s registered trade mark;

(c) Directing the Defendant to pay the Plaintiff damages of Rs.1

Crore for infringing the Plaintiff’s registered trade mark,

(d) Directing the Defendant to pay to the Plaintiff the costs of the
suit, and
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(e) Pass such further or other order, as this Hon’ble Court may
deem fit and proper in the circumstances of the case and thus
render justice.”

10. The appellant also filed I.A.No.1535 of 2018 along with the plaint

invoking Order XXXIX Rules 1 and 2 CPC and also Section 135 of the

Act for grant of an ex parte ad interim injunction restraining the

respondent from engaging in the services listed under Trade Mark Class

41, using the mark ‘CHIREC’ or any other similar sounding mark in the

course of their business, and from infringing the appellant’s registered

trade mark till the disposal of the suit. It reiterated the contents of the

plaint in the said Application.

The case of the respondent

11. Written statement was filed in the suit by the respondent opposing

grant of the relief to the appellant.

12. In the Written Statement, the respondent contended that it is not

correctly described in the plaint; that the respondent is a registered

Charitable Trust by name Pavan Education and Charitable Trust, and the

appellant had not described the respondent properly; and so the suit is

liable to be rejected for mis-joinder of necessary parties.

13. It was denied by the respondent that the appellant was using the

word ‘CHIREC’ for educational activities for the last 29 years and it was

also denied that the appellant’s trade mark had acquired any reputation,

goodwill or transborder reputation beyond Hyderabad.

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14. It is contended that the respondent is carrying on activities of

running educational activities since 2005 in the State of Karnataka in

Tumkur District in Madhugiri, a backward Taluk to impart education to

rural masses; that the respondent, after making thorough search in the

trade mark registry, adopted the trade mark ‘CHIREC’ for running

schools and started using the same after noticing in 2005 that none had

been using the said trade mark ‘CHIREC’ for running schools.

15. The respondent contended that it is not operating beyond

Madhugiri Taluk of Tumkur District in Karnataka State; that it is only

having an English Medium school where the students would take

Karnataka State Board Examination and since the appellant was

allegedly imparting education in International syllabus and CBSE, there

would not be any confusion as alleged by the appellant.

16. The respondent contended that there would be no confusion in the

minds of parents and there cannot be any impression in the minds of

general public that the respondent had adopted the word ‘CHIREC’ only

to mislead the parents.

17. According to the respondent, its adoption of the trade mark

‘CHIREC’ is honest and concurrent user over a period of 13 years and it

had no knowledge of existence of another school by the same name and

so the respondent is also entitled to use the same.

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18. It is contended that the fonts adopted by the appellant and the

respondent are totally different, the colour combination used by the

appellant and that of the respondent for their respective logos are totally

different, and there would not be any confusion.

19. It is contended that the fee charged for students admitted in it’s

school by the respondent is nominal because it is a Charitable

organization and it is denied that it is encashing on the reputation of the

appellant by adopting similar name.

20. According to the respondent, the term ‘CHIREC’ is short form of

“CHILDREN EDUCATION CENTRE”; that parents would not be

carried away by use of name unlike in the case of consumer goods and

the parents who would be well educated would thoroughly go through

the advertisements, brochures and curriculum apart from medium of

instruction, etc., before admitting their children into the school; use of

similar name in a different State cannot be said to be causing confusion

when it is purely accidental and honest user; and it would not amount to

infringement of the registered trade mark of the appellant.

21. It is contended by the respondent that the appellant had made an

application for registration of its trade mark on 27.01.2016 claiming user

from 20.02.1989 without producing any evidence; that the Registrar of

Trade Marks raised an objection stating that the same trade mark is

deceptively similar to another registered trade mark; and the appellant,

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without producing any evidence, had obtained registration of the trade

mark. It is contended that the appellant did not come with clean hands;

that its registration of the trade mark ‘CHIREC’ was defective and was

liable to be rectified.

22. It is also contended that the appellant failed to prove prima facie

case; that the suit is barred by limitation and also hit by delay and laches

and there is lack of jurisdiction for the Court below to entertain the suit

in view of Section 134 of the Act.

23. Counter affidavit was filed in I.A.No.1535 of 2018 reiterating the

contents of the written statement.

Rejoinder of the appellant

24. Rejoinder was filed by the appellant stating that the appellant was

not aware of the existence of any charitable trust as was claimed by the

respondent; that the appellant came to know of it only through the

written statement filed by the respondent; and such trust can always seek

to implead itself in the suit.

25. It is stated that the respondent had not made any attempt to get a

registered trade mark in their favour, but is infringing the appellant’s

registered trade mark, which is inventive and unique to the appellant and

the defence of the concurrent and honest usage cannot be accepted.

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The order of the Court below

26. By order dt.06.01.2020, the Court below dismissed I.A.No.1535

of 2018.

27. After referring to the contentions of both sides, the Court below

referred to the claim of the appellant that its trade mark is registered on

27.01.2016 and the contention of the respondent that it has been using

the name ‘CHIREC’ since 2005. It also took note of the contention of

the appellant that it is using the said trade mark since 1989 and observed

that until and unless full-fledged trial is held, the contention of the

appellant with regard to the use of the logo by the respondent cannot be

established.

28. It agreed with the contention of the respondent that a comparative

study of the trade mark used by both parties showed that the respondent

is using the word ‘CHIREC’ with a logo on both sides of the name and

their name is written only in blue colour with same font, while the trade

mark used by the appellant is in different colours, i.e., red, green and

blue and the description of the name ‘CHIREC’ is in different font in

different style and the term is used without any logo.

29. It observed that the parents of the children who would admit their

wards into the schools are not illiterates and they would not be carried

away by the use of name ‘CHIREC’, particularly when the curricula of

both schools are different and when the respondent is using the name
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only in the District of Tumkur in Madhugiri Taluk, a remote place of

Karnataka State, while the appellant is running the school in the city of

Hyderabad.

30. It also held that the respondent was imparting education only in

Karnataka State Board syllabus from Classes 1 to 10, but the appellant is

an International School and is teaching CBSC and other International

syllabi, and the appellant was also charging more fee than was being

charged by the respondent.

31. It observed that since the respondent was a Charitable Trust, it is

charging a minimum fee and it would normally admit students of middle

class or lower middle class families who would not be carried away by

the name of the school unlike parents who would admit their children in

the school of the appellant, who are likely to be more prosperous since

they would have to pay higher rate of fee and who would be interested in

getting their children CBSE or other international syllabi.

32. It took note of the contention of the respondent that it has been

using the said trade mark since 2005, while the registration was obtained

by the appellant in the year 2016 long afterwards. It observed that unless

a full-fledged trial is conducted, it would not be possible for the Court to

come to a conclusion either way.

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33. According to the Court below, education is not a product of

consumption, such as medicine or food item and a customer would not

be misled since the issue relates to an educational institution.

34. It therefore concluded that the appellant did not establish prima

facie that the adoption of the trade mark by the respondent is itself with a

dishonest intention, and that at the stage of considering the interim

application, it is not possible to come to any conclusion without trial. It

also observed that if temporary injunction is granted, the academic year

of the students of the respondent would be jeopardized and the

respondent would be prevented from using such logo and it has to also

go for change of name and obtain various permissions from various

authorities to run the school.

35. Assailing the same, this Appeal is filed.

The consideration by the Court

36. Heard Sri Avinash Desai, counsel for the appellant and Sri

M.Rammohan, counsel for the respondent.

37. In the plaint, the appellant had described the respondent merely as

‘M/s Chirec Public School’ without indicating whether it is a Company

under the Companies Act or a firm or a proprietary concern.

38. When the respondent had indicated in the written statement that

the school M/s. Chirec Public School mentioned as defendant in the

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Written statement is being run by the trust called Pavan Education and

Charitable Trust and the material filed along with the appeal also proves

the said fact prima facie, the appellant should have at least taken steps to

implead the said trust as a party to the suit, instead it had filed a

rejoinder stating that it was not aware of the said trust running the school

and the trust can get itself impleaded in the suit.

39. In our considered opinion, the proper party in this suit is the said

trust prima facie and in spite of being informed about it, the appellant

chose not to implead the said trust. This reluctance on the part of the

appellant is inexplicable. The trial court did not notice this aspect.

40. This Court noticed that the plaint filed in the paper book did not

mention what documents were filed by the appellant along with the

plaint. In I.A.No.1535 of 2018 also no documents were marked in the

said I.A. by both sides, though some of the documents filed by both

parties had been adverted to in the impugned order by the Court below.

Though counsel for the appellant sought to contend that this Court

should allow the appeal and remit the matter back to the Court below on

account of omission of the Court below to mark the documents filed by

the parties, we do not think that such a course of action is appropriate for

the following reasons.

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41. No doubt, the appellant is contending that it is using the trade

mark ‘CHIREC’ since 1989 and that it had obtained registration of the

said trade mark on 27.01.2016.

42. In the paper book filed in this case, certain documents including

the certificate of registration of the trade mark ‘CHIREC’ granted on

27.1.2016 are filed apart from other documents dealing with affiliation,

curriculum, honours which the school obtained, etc.

43. The respondent, on the other hand, is contending that it has been

using the name ‘CHIREC’ since 2005 and claims to have made thorough

search in the trade mark registry before adopting the trade mark

‘CHIREC’ for running schools and pleaded that it was using the said

trade mark after noticing that nobody was using the said trade mark for

running schools.

44. The documents placed on record also indicate that Pavan

Education and Charitable Trust, Madhugiri, which is running the

respondent school, was granted permission on 26.04.2005 by the Block

Education Officer, Madhugiri to start Kannada Medium pre-primary

school from Classes 1 to 5; renewal of recognition for the said classes

was granted on 01.12.2016 not only in Kannada Medium but also in

English Medium and adoption of the name ‘Chirec Public School’ by the

said trust from 23.08.2007 after obtaining registration under the

Karnataka Education Act, 1983 of the said name with Karnataka State
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Public Institutions Department, Bengaluru. Subsequent renewals granted

in 2013 by Zilla Panchayath, Tumkur on 30.10.2013 to the said school

and permission to teach up to 10th class granted on 28.05.2014 by the

Deputy Director, Public Education Department, Tumkur have also been

filed.

45. So prima facie it appears that the respondent has been using the

name ‘CHIREC’ from at least 2007 from the documents filed by the

appellant before this Court though it has been running the said school

from 2005. As already noted, the registration of the trade mark

‘CHIREC’ by the appellant is only in 2016.

46. Except one newspaper advertisement allegedly published in

Deccan Chronicle newspaper on 04.11.1989 about its nursery school, no

material is filed to show that the appellant has been using the word

‘CHIREC’ in their school for imparting education to Classes 1 to 10

from 1989 prima facie. In any event, in 1989 , the appellant had no

registered trade mark for the said term.

47. The Court below as well as this Bench had perused the trade mark

being used by both the parties. Prima facie it appears that the respondent

is using the word ‘CHIREC’ with a logo and its name is written only in

blue colour with same font, but the appellant is using the said trade name

with different style and with different font without any logo.
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48. Therefore, it is unlikely that the parents of the children who

would admit their children into the schools would be misled into

thinking that the respondent is using the appellant’s trade mark

particularly when the curricula being adopted by both schools are

different. According to the respondent, it is imparting education from

Classes 1 to 10 with Karanataka State Board syllabus, while the

appellant states that it is imparting education in International syllabi

apart from CBSE. Also, the fee charged by the appellant is much higher

than that of the respondent.

49. The respondent is confining use of the name ‘CHIREC’ only in

Madhugiri Taluk in Tumkur District of Karnataka State which is a

remote place more than 100 KM from Bengaluru city as per google

maps, whereas the appellant is located in the city of Hyderabad. This is

also a factor which cannot be ignored. It is prima facie unlikely that the

people who intend to admit their children in the respondent school would

go by the alleged reputation of the appellant in the city of Hyderabad or

elsewhere.

50. In these circumstances, the defence of prior user and concurrent

and honest user raised by the respondent since 2005 cannot be simply

brushed aside.

51. Prima facie we are of the opinion that the use of the trade mark

‘CHIREC’ by the respondent is an honest concurrent user since 2005

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and since the registered trade mark is obtained only in 2016 and the suit

is filed is 2018, the Court below rightly refused to grant any interim

relief to the appellant.

52. Therefore, for all the aforesaid reasons, we find no merit in the

appeal and it is accordingly dismissed.

53. However it is made clear that observations / findings made in this

order shall not influence the court below while deciding the suit.

54. Pending miscellaneous petitions, if any, in this Appeal shall also

stand dismissed. No costs.

____________________________
M.S.RAMACHANDRA RAO, J

_______________________
T.AMARNATH GOUD, J

Date: 3 -07-2020
Svv